UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582, Slip Op. (N.D. Ill. Apr. 13, 2009) (Bobrick, Ret. J. & Special Master).
Special Master Bobrick, a retired judge, awarded defendant Starent its attorneys fees related to Starent’s efforts to get complete interrogatory responses from plaintiff UTStarcom. In an earlier opinion (click here for the Blog’s related post), the Court denied Starent’s request to dismiss plaintiff’s trade secret misappropriation claim as a sanction for UTStarcom’s incomplete responses, but awarded attorneys fees. Of particular interest, the Special Master held that block billing was not inappropriate and that block billed entries could be recovered. Additionally, based in part on UTStarcom’s failure to provide its rates as part of a reasonableness analysis, the Special Master held that Starent’s rates were not unreasonable, although they may have been more than standard local rates. The Court also noted that patent cases required special expertise which often commands a premium. The Special Master did, however, reduce the rates of Starent’s law students whom the Special Master noted were neither lawyers nor paralegals. Finally, the Special Master reduced by one-third the bills for certain time that was added to Starent’s Bill of Costs late.

Continue Reading Court Finds National Rates Reasonable & Awards Attorney’s Fees

UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582, Slip Op. (N.D. Ill. Jan. 22, 2009) (Bobrick, Ret. J. & Special Master).
Special Master Bobrick, a retired judge, denied defendant Starent’s motion to dismiss plaintiff UTSI’s trade secret misappropriation claim for repeatedly deficient interrogatory responses related to the claim. Over the course of a year, UTSI served six responses to the interrogatories at issue based upon various requests by Starent and orders by the Special Master. After the sixth set of responses, Starent agreed that the answers were sufficient. Starent, however, requested dismissal of the claim based upon UTStarcom’s repeated failure to provide a substantive answer. UTStarcom responded that dismissal was a drastic remedy that was not warranted because had provided substantive answers and because Starent had not been prejudiced by the delay. UTStarcom even suggested other remedies like exclusion of late produced evidence. The Special Master held that it was a close case and that either outcome would be defensible. The Court however, denied Starent’s motion to dismiss but did award attorney’s fees for the filing of Starent’s motion.

Continue Reading Court Barely Denies Motion to Dismiss for Delayed Interrogatory Answers

UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582, Slip Op. (N.D. Ill. Mar. 25, 2009) (Lindberg, Sen. J.).
Judge Lindberg denied the individual defendant’s Fed. R. Civ P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. The individual defendant’s four business trips to Illinois and prior work in California for plaintiff did not create general jurisdiction. But the Court did have specific jurisdiction over the individual defendant. Individual defendant was president of defendant Starent. As president, he had authority over Starent’s alleged pattern of hiring away plaintiff’s employees and allegedly misappropriating plaintiff’s trade secrets from those employees. Because the alleged trade secret misappropriation harmed plaintiff’s Illinois-based business in Illinois, the Court had general jurisdiction over Starent and its president, the individual defendant.

Continue Reading Alleged Harm to Plaintiff in Illinois Creates Specific Jurisdiction

UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582 Slip Op. (N.D. Ill. Dec. 5, 2008) (Lindberg, Sen. J.).
Judge Lindberg granted in part plaintiff’s motion to dismiss certain of defendant Starent’s counterclaims. Starent’s allegations that specific patentee withheld specific references from the Patent Office were sufficient to meet the Rule 9(b) heightened pleading standards for inequitable conduct. But the Court dismissed Starent’s tortious interference counterclaim to the extent that it was based upon the filing of a law suit because Illinois prohibits tortious interference with prospective economic advantage claims based upon filing law suits. The Court also dismissed Starent’s malicious prosecution counterclaim because Starent did not allege a special injury, such as arrest, seizure of property, taking or interference with property.

Continue Reading Allegations That Specific References Were Withheld Sufficient for Inequitable Conduct Claim

UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582, Min. Order (N.D. Ill. Aug. 16, 2007) (Lindberg, J.).
Judge Lindberg denied defendants’ motion to dismiss plaintiff’s state law claims and its claim seeking assignment of defendants’ patents to plaintiffs. The Court held that the claim seeking assignment of defendants patents to plaintiff was an invalidity contention. Plaintiff claimed that it had invented defendants’ patented inventions before defendants. While plaintiff did not use the correct terms, it met the notice pleading standards. Additionally, plaintiff’s state law trade secret and tortious interference claims were sufficiently related to the patent claims to come within the Court’s supplemental jurisdiction.
The Court refused to consider plaintiff’s requests for additional discovery because it was made orally in court and in plaintiff’s responsive pleading, but never as a written motion as required by Fed. R. Civ. P. 7(b)(1).

Continue Reading Notice Pleading Does Not Require Correct Claim Name